national arbitration forum

 

DECISION

 

Children's Network, LLC v. sum blue

Claim Number: FA0706001002628

 

PARTIES

Complainant is Children's Network, LLC (“Complainant”), represented by David M. Silverman, of Davis Wright Tremaine LLP, 1919 Pennsylvania Ave. N.W., Suite 200, Washington, DC 20006.  Respondent is sum blue (“Respondent”), 444 Oak, Bethel, OK 40404.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sproutsmart.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.

 

On June 11, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <sproutsmart.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 4, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sproutsmart.com by e-mail.

 

On July 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

On July 17, 2007 Respondent submitted a Response to the Complaint.  Although the Response was untimely, the Panel, in the exercise of its discretion, has chosen to consider the Response.  

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <sproutsmart.com> domain name is confusingly similar to Complainant’s SPROUT mark and identical to Complainant’s SPROUT SMART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <sproutsmart.com> domain name.

 

3.      Respondent registered and used the <sproutsmart.com> domain name in bad faith.

 

B.     Respondent makes the following assertions:

 

1.      Complainant has not actually used the term “sproutsmart” to describe its services.

 

2.      Respondent contends that it has developed common law rights to the name “sproutsmart” for the purpose of operating a search service.

 

3.      Respondent contends that Tim Lamonte, the Overseer of the Albany Light Church, originally registered the domain name in 1999.

 

FINDINGS

Complainant, Children’s Network, LLC, has provided television programming for preschool-aged children since 2005.  Complainant airs its programming on the “PBS Kids Sprout television network,” which is commonly referred to as SPROUT.  Programming includes such popular children’s television shows as “Sesame Street,” “Barney & Friends,” “Bob the Builder,” and “Teletubbies.”  According to the news publication “Television Week,” Complainant has generated more than 100 million on-demand orders for its programming since its debut in April 2005, and its digital channel is currently in 20 million homes.  Complainant also uses the SPROUT name to provide games and other material related to its television shows on its website at the <sproutonline.com> domain name.  Finally, Complainant has pending applications with the United States Patent and Trademark Office (“USPTO”) for the SPROUT mark (Serial No. 78/510,508 filed Nov. 3, 2004).

 

Complainant is currently planning to launch a “prosocial” campaign that provides information to children regarding health, nutrition, ethnic diversity, safety, and social developmental issues.  Complainant has chosen to name this campaign SPROUT SMART.  Complainant has a pending application with the USPTO for the SPROUT SMART mark (Serial No. 77/028,976 filed Oct. 25, 2006).

 

The <sproutsmart.com> domain name was registered on December 14, 1999.  The record is unclear as to who was the original registrant.  The record is equally unclear as to exactly when Respondent became the registrant of the domain name.  However, the Panel finds that Complainant has shown to its satisfaction that Respondent became the registrant of the disputed domain name some time between August 1, 2006 and April 23, 2007.  Although the WHOIS record identifies the registrant of the domain name as “sum blue,” of Bethel, Oklahoma, the Response to the Complaint was submitted by Albany Light Church of Albany, Oregon.

 

Respondent is using the <sproutsmart.com> domain name to display a list of hyperlinks that are unrelated to Complainant’s business. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the SPROUT and SPROUT SMART marks.  Complainant has pending trademark applications with the USPTO, but the marks are not currently registered.  However, it is not necessary for Complainant to hold a registered trademark in order to establish rights in the marks.  Common law rights are sufficient to satisfy Policy ¶ 4(a)(i).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant has not established common law rights in the SPROUT SMART mark.  Complainant is planning to launch a “prosocial” campaign, but has not submitted any evidence that this has taken place.  There is no evidence of any current consumer recognition of SPROUT SMART; therefore, the mark cannot have secondary meaning.  See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).  Similarly, there is no evidence in the record that Respondent has established common law rights “to the name ‘sproutsmart’ for the purpose of operating a search service.”

 

However, Complainant has sufficiently established common law rights in its SPROUT mark through extensive and continuous use.  Complainant has consistently aired its children’s television programming using the SPROUT mark since April of 2005, and has generated more than 100 million on-demand orders for its programming.  Its digital channel is currently in 20 million homes.  Furthermore, Complainant has branded games and other merchandise using the SPROUT mark.  Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the SPROUT mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).   

 

Respondent’s <sproutsmart.com> domain name contains Complainant’s SPROUT mark in its entirety and adds the generic word “smart” as well as the generic top-level domain (“gTLD”) “.com.”  Complainant’s SPROUT mark remains the dominant portion of the disputed domain name despite the added term, and the addition of the gTLD is without relevance to this analysis.  Therefore, the Panel finds that Respondent’s <sproutsmart.com> domain name is confusingly similar to Complainant’s SPROUT mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <sproutsmart.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). 

 

The Panel can find no evidence in the record indicating that Respondent is commonly known by the <sproutsmart.com> domain name.  The WHOIS information identifies Respondent as “sum blue,” and the Response is submitted by the Albany Light Church.  There is nothing in the record to demonstrate that either “sum blue” or the Albany Light Church has authority to use the SPROUT mark, or any variation thereof, in a domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <sproutsmart.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent is using the <sproutsmart.com> domain name to display a list of hyperlinks that are unrelated to Complainant’s business.  Previous panels have indicated that such use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Therefore, the Panel concludes that Respondent’s use of the <sproutsmart.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <sproutsmart.com> domain name to display a list of hyperlinks that are unrelated to Complainant’s business.  Because the disputed domain name is confusingly similar to Complainant’s SPROUT mark, this use may lead customers to become confused as to the affiliation, sponsorship, or endorsement of the goods and services advertised on Respondent’s website that resolves from the disputed domain name.  Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s SPROUT mark, presumably from earning click-through fees.  Thus, Respondent’s registration and use of the <sproutsmart.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sproutsmart.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  July 26, 2007

 

 

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